Appeal 2007-3918
Application 10/203,926
5. Claim 7 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Mitsuboshi and Haren (Answer 9).
The Appellants appeal from the Examiner’s decision rejecting the
claims on appeal under 35 U.S.C. § 112, first paragraph, and 35 U.S.C.
§ 103(a).
PRINCIPLES OF LAW, FACTS, ISSUES, and ANALYSES
ENABLEMENT
It is well established that the Examiner has the “burden of giving
reasons, supported by the record as a whole, why the specification is not
enabling…Showing that the disclosure entails undue experimentation is part
of the PTO’s initial burden . . .” In re Angstadt, 537 F.2d 498, 504,
190 USPQ 214, 219 (CCPA 1976). In determining whether any given
disclosure would require undue experimentation to make the claimed subject
matter, the Examiner must consider the breadth of the claims, the quantity of
experimentation necessary, the amount of direction or guidance presented,
the presence or absence of working examples, the nature of the invention,
the state of the prior art, the relative skill of those in the art, and the
predictability of the art. In re Vaeck, 947 F.2d 488, 495, 20 USPQ2d 1438,
1444 (Fed. Cir. 1991).
Here, the Examiner contends that the application disclosure does not
enable one of ordinary skill in the art to make the subject matter recited in
claims 13 and 14 since “it does not tell how to manipulate the vulcanization
process in order to obtain the volume fraction of 35-38% [sic., 35-80%]”
(Answer 3). The dispositive question is, therefore, whether the Examiner
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